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` STEVEN ORR
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`K-40 ELECTRONICS, LLC,
` Petitioner,
`vs. Case No.:
` IPR2013-00203
`ESCORT, INC., PATENT 7,999,721
` Patent Owner.
`
` VIDEOTAPED DEPOSITION OF STEVEN ORR
` Taken on Behalf of the Petitioner
`
` DATE TAKEN: Wednesday, February 26, 2014
` TIME: 9:00 a.m. - 1:15 p.m.
` PLACE: Hampton Inn & Suites
` 975 University Parkway
` Sarasota, Florida
`
` STENOGRAPHICALLY REPORTED BY:
` NORA KELLY-MEOLA,RPR
`
` JOB NO.: 71443
`
`TSG Reporting - Worldwide 877-702-9580
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`K40 Exhibit 1023, pg. 1
`IPR2013-00240
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`

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`Page 2
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` STEVEN ORR
`APPEARANCES:
`Counsel for Petitioner:
` Michael Kiklis, Esquire
` Oblon Spivak McClelland
` Maier & Neustadt
` 1940 Duke Street
` Alexandria, Virginia 22314
`
`Counsel for Patent Owner:
` John Paul Davis, Esquire
` Wood, Herron & Evans
` 2700 Carew Tower
` 441 Vine Street
` Cincinnati, Ohio 45202
`
`ALSO PRESENT:
` Jamie Hollingsworth, Videographer
`
`TSG Reporting - Worldwide 877-702-9580
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`K40 Exhibit 1023, pg. 2
`IPR2013-00240
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` STEVEN ORR
` I N D E X
`WITNESS: PAGE:
`STEVEN ORR
`Called by the Petitioner:
` Direct Examination by Mr. Kiklis 8
` Cross-Examination by Mr. Davis 99
` Redirect Examination by Mr. Kiklis 110
`
`STIPULATIONS 114
`INSTRUCTIONS TO DEPONENT 115
`ERRATA SHEET 116
`CERTIFICATE OF OATH 117
`REPORTER'S DEPOSITION CERTIFICATE 118
`
` E X H I B I T S
`Exhibit No. 1008 Notice of deposition 11
`Exhibit No. 1009 Deposition testimony excerpts 35
`Exhibit No. 1010 Graph2.bas files 63
`Exhibit No. 1011 Directory of files 63
`Exhibit No. 1012 Graph3.bas 67
`Exhibit No. 1013 Trial testimony excerpts 90
`
`TSG Reporting - Worldwide 877-702-9580
`
`K40 Exhibit 1023, pg. 3
`IPR2013-00240
`
`

`

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` STEVEN ORR
` P R O C E E D I N G S
` THE VIDEOGRAPHER: Today's date is
`February 26, 2014. The time is approximately
`9:03 a.m. My name is Jamie Hollingsworth, I'm the
`videographer. The court reporter is Nora Meola. We
`are present at the Hampton Inn in Sarasota, Florida.
`We are here for the purpose of taking the deposition
`of Steven Orr. The case is instituted in the United
`States Patent and Trademark Office. It's before the
`Patent Trial and Appeal Board. The short style of
`the case is K-40 Electronics versus Escort.
` I will now ask the attorneys to introduce
`themselves beginning with the petitioner's attorney.
` MR. KIKLIS: Mike Kiklis from Oblon & Spivak,
`for petitioner, K-40 Electronics.
` MR. DAVIS: Good morning. My name is John
`Davis with Wood, Herron & Evans representing Escort.
`And I would want the record to reflect which case
`we're proceeding first on today with regard to the
`deposition. There's two cases pending before the
`patent trial and appeal board.
` MR. KIKLIS: This is a -- my position is that
`this is a deposition that was noticed to start at
`9:00 for two proceedings and my questions are going
`
`TSG Reporting - Worldwide 877-702-9580
`
`K40 Exhibit 1023, pg. 4
`IPR2013-00240
`
`

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` STEVEN ORR
`to be applicable to both, otherwise it would be a
`waste of time for us to cover the same background
`and what have you.
` MR. DAVIS: Escort objects to that and pursuant
`to prior agreement with counsel there is going to be
`two discrete depositions taking place today, one
`would start and one would stop. I present for the
`record the correspondence with opposing counsel to
`that effect. This was the same procedure used
`during Escort's deposition of K-40's proffered
`expert, Dr. Bartone back in January. Counsel
`specifically requested that one case would stop, one
`case would start and it would not be intermingled on
`the record.
` MR. KIKLIS: And I'm asking you, Counsel, if
`you'd agree to the common parts being applicable to
`both.
` MR. DAVIS: What -- what Escort's position is
`is that we want the record to reflect which
`deposition, which case is being deposed first. I've
`not heard that. As far as we're taking two cases,
`there's two depositions, we can't have a deposition
`taken simultaneously.
` MR. KIKLIS: But there's matter common to both.
`
`TSG Reporting - Worldwide 877-702-9580
`
`K40 Exhibit 1023, pg. 5
`IPR2013-00240
`
`

`

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` STEVEN ORR
`This gentleman is a fact witness.
` MR. DAVIS: It doesn't matter. We have two
`different cases. We, as an accommodation to Escort,
`said you could, at your request, said both
`depositions could be taken today, that was your
`request, so long as there's discrete demarcation of
`when one started and one stopped. So my simple
`question is, which deposition, which case are we
`starting with today?
` MR. KIKLIS: We're starting with the 721.
` MR. DAVIS: Okay. Can the record reflect which
`IPR case number that is please.
` MR. KIKLIS: 203.
` MR. DAVIS: Again, Escort's position is when
`that -- you're finished with that deposition, we'll
`then start -- stop that transcript and start a new
`deposition with a new transcript in the second case.
` MR. KIKLIS: And for the record I think that's
`a huge waste of time, needless -- needless costs
`being incurred.
` MR. DAVIS: Pause for a moment.
` MR. KIKLIS: Are we ready to go, John?
` MR. DAVIS: Based on your comments I have to go
`back and read into the record the prior agreement
`
`TSG Reporting - Worldwide 877-702-9580
`
`K40 Exhibit 1023, pg. 6
`IPR2013-00240
`
`

`

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` STEVEN ORR
`with your colleague.
` MR. KIKLIS: Well, regardless of what that
`agreement is, I ask for an accommodation and I had
`your answer. So instead --
` MR. DAVIS: The accommodation was this
`deposition -- only one deposition was noticed prior
`to yesterday --
` MR. KIKLIS: Understood.
` MR. DAVIS: -- in violation of the rules.
`Scott asked as an accommodation could you take both
`depositions today as a matter of efficiency. We
`agreed with the distinct caveat that there had --
`that they weren't going to be commingled, which is
`like a question that I don't even know why I'm even
`asking that or why I'm even making that or why there
`is even a dispute on that point. You never
`commingle depositions in multiple cases. The
`grounds are whether there's commonality.
` MR. KIKLIS: That's not true. Besides the
`point, I am willing to start with 721.
` MR. DAVIS: And end with 721 and start with the
`next case at your discretion.
` MR. KIKLIS: Correct. But you do agree that
`the underlying facts are common to both?
`
`TSG Reporting - Worldwide 877-702-9580
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`K40 Exhibit 1023, pg. 7
`IPR2013-00240
`
`

`

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` STEVEN ORR
` MR. DAVIS: Escort's position is there's two
` cases --
` MR. KIKLIS: Understood.
` MR. DAVIS: -- pending.
` MR. KIKLIS: Understood.
` MR. DAVIS: And you're free to ask the witness
` any questions about those respective cases in
` respective depositions.
` STEVEN ORR, called as a witness by the
` Petitioner, having been first duly sworn, testified
` as follows:
` THE WITNESS: I do.
` DIRECT EXAMINATION
`BY MR. KIKLIS:
` Q. Good morning, Mr. Orr.
` A. Good morning.
` Q. My name is Mike Kiklis and I am the attorney
`for the petitioner, K-40 Electronics in 203 as well as
`the 240-IPR's that are pending before the patent office.
`I'm going to be asking you some questions today and my
`first question is, have you been deposed before?
` A. Many times.
` Q. Many times. With relation to your patent as
`well as the Fleming patent; is that correct?
`
`TSG Reporting - Worldwide 877-702-9580
`
`K40 Exhibit 1023, pg. 8
`IPR2013-00240
`
`

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` STEVEN ORR
` A. Yes.
` Q. How many times have you been deposed?
` A. At least a dozen times in my life on various
`matters.
` Q. What matters in particular that you can recall?
` A. Other radar related issues. Going back over
`the years to my experience with Cincinnati Microwave on
`other cases that they pursued, Beltronics and Wesler and
`others that there are so many, I don't remember all of
`them now.
` Q. Were they all patent cases?
` A. Yes. Everything that I've -- I've done in that
`regard was related to patent matters.
` Q. Okay. Have you been deposed for any cases
`other than patent cases?
` A. Some private family matters as well.
` Q. Can you let me know what they are.
` A. We had issues with other families over the
`management of the estates that I was pulled into that I
`had to help clarify.
` Q. Management of the?
` A. Estates --
` Q. Oh, the estates.
`
`
`TSG Reporting - Worldwide 877-702-9580
`
`K40 Exhibit 1023, pg. 9
`IPR2013-00240
`
`

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` STEVEN ORR
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` Q. So then you generally understand the rules for
`a deposition?
` A. I believe so, although I'm certainly a novice
`here.
` Q. Sounds like you're more than a novice. I'm
`going to be asking you several questions today, a series
`of questions today and what I'd like for you to do is
`please wait for me to finish my question before you
`start answering it and that way we'll have a clear
`record. Okay?
` A. Good.
` Q. And if you're not able to understand my
`question at all, just let me know and I'll try to
`rephrase it so we can seek and understand it and answer
`the questions, have a clear record. If you need to take
`a break, let me know, we can take a break as long as
`there isn't a question pending. I will try to take a
`break about every hour or so. Does that work for you?
` A. Thank you.
` Q. Okay. Now, right now are you under the
`
`TSG Reporting - Worldwide 877-702-9580
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`K40 Exhibit 1023, pg. 10
`IPR2013-00240
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`

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` STEVEN ORR
`influence of anything that might affect your testimony
`here today?
` A. No.
` Q. So no drugs, alcohol, medications of any sort?
` A. None.
` Q. Now, you understand you've been sworn in and
`your testimony today is under oath. Do you understand
`that?
` A. Yes.
` Q. And if you're untruthful today you could be
`charged with perjury. You understand that?
` A. Yes.
` MR. KIKLIS: Can you mark this as IPR-203
` Exhibit 1008.
` (Exhibit No. 1008 marked for identification.)
` MR. KIKLIS: What I'm going to do for the
` exhibit numbers, John, is I'm going to have a
` preface to them with respect to each -- since we are
` going the whole day, to each matter for each
` proceeding so that way it should be clear and that
` way, you know, if anything gets jumbled up we should
` be fine. And also I might be using some exhibits
` from one and the other. Okay?
` Q. All right. The court reporter has handed you
`
`TSG Reporting - Worldwide 877-702-9580
`
`K40 Exhibit 1023, pg. 11
`IPR2013-00240
`
`

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` STEVEN ORR
`what's marked as Exhibit 1008 for proceeding 203. Have
`you seen that before, sir?
` A. I'm not sure yet. I'd have to see more of it.
` Q. Okay. Take a look at it.
` A. Yes. I have seen this document.
` Q. So it's your understanding that you're here to
`discuss your involvement and your declaration with
`respect to IPR-203; correct?
` A. When I saw this document, I felt like it
`misidentified me as Escort's expert. I am not their
`expert.
` Q. In fact, you're a fact -- fact witness;
`correct?
` A. That's as I understand it.
` Q. Yeah. So for shorthand purposes today, I'm
`going to be referring to IPR-2013 as IPR-203. And later
`in the day I'll be referring to IPR-2013 240 as IPR-240.
`Okay? Is that okay, sir?
` A. Yes.
` Q. Okay. If my shorthand notation ever gets a
`little bit confusing for you, just let me know. I'm
`handing you what's previously -- it's already in
`evidence Exhibit 1001.
` A. Okay.
`
`TSG Reporting - Worldwide 877-702-9580
`
`K40 Exhibit 1023, pg. 12
`IPR2013-00240
`
`

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` STEVEN ORR
` Q. Do you recognize this?
` A. This appears to be the 721 patent in totality.
` Q. You're the sole inventor of the 721 patent;
`isn't that correct?
` A. Yes.
` Q. And the 721 patent is at issue in the -- in
`this proceeding, the 2003 proceeding; correct?
` A. As I understand it, yes.
` Q. Now, you prepared a declaration as part of this
`proceeding; is that correct?
` A. Yes.
` Q. And who did you speak to or work with as part
`of your preparation of that declaration?
` A. I spoke with my counsel, John Davis, Tom
`Humphrey and John Grinton, our expert witness.
` Q. Did you speak to anybody else as part of the
`preparation of your declaration?
` A. No one else comes to mind.
` Q. And generally with respect to this entire
`proceeding, the 203-IPR, have you worked with or spoken
`to anyone else other than Mr. Davis, Mr. Humphrey and
`Mr. Grinton, is that his name?
` A. Yes. John Grinton. No, I have not.
` Q. What did you talk to Mr. Grinton about?
`
`TSG Reporting - Worldwide 877-702-9580
`
`K40 Exhibit 1023, pg. 13
`IPR2013-00240
`
`

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` STEVEN ORR
` A. John was trying to understand concepts and as
`the inventor of this, I tried to explain to him what I
`had done in the process of conceiving of this work and
`the experiments that I had done in relation to it.
` Q. How many conversations did you have with
`Mr. Grinton?
` A. Perhaps five. Although, we're only speaking
`about the preparation for this trial; correct? I've
`known John for many years, so there have been other
`conversations in past trials that have had a similar
`nature to this one.
` Q. How long have you known Mr. Grinton?
` A. I don't know when I first met John, but he was
`involved in the initial dispute with Fleming and I met
`him before those trials and worked with him a bit at
`that time as well.
` Q. Are you friends?
`
` Q. Do you see Mr. Grinton socially?
` A. No. I've -- had never met John prior to any of
`this.
` Q. With respect to the 203 proceeding, you said
`you spoke to Mr. Grinton five times; is that correct?
` A. That's an estimate.
`
`TSG Reporting - Worldwide 877-702-9580
`
`K40 Exhibit 1023, pg. 14
`IPR2013-00240
`
`

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` STEVEN ORR
` Q. And how long did you speak to him for each
`time?
` A. Perhaps a total of two hours. In many cases it
`wasn't a conversation with John so much as the fact that
`John was present when I was speaking and he would have
`heard things that I would have said that may constitute
`an answer to your question here.
` Q. Who else was in the room?
` A. Other -- other people. Tom Humphrey may have
`been there, John Davis may have been there.
` Q. Anybody else?
` A. No.
` Q. So you met with Mr. Grinton in the presence of
`your lawyers; is that right?
` A. Yes.
` Q. Okay. So a total of about two hours you spent
`meeting with Mr. Grinton?
` A. Not with him directly, but in -- in his
`company.
` Q. In his company. And what's his company's name?
` A. No.
` Q. I'm sorry. In person.
` A. Yes. His person, yes.
` Q. Okay. Did you speak with Mr. Grinton on the
`
`TSG Reporting - Worldwide 877-702-9580
`
`K40 Exhibit 1023, pg. 15
`IPR2013-00240
`
`

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` STEVEN ORR
`phone?
` A. No.
` Q. Do you have any written communications with
`him, e-mails, documents shared, et cetera?
` A. Not in relation to this case.
` Q. Do you have communications with him in relation
`to other cases?
` A. During the prosecution of the original Fleming
`trial, he and I exchanged e-mail of technical interests,
`it had no relation to the case. We found some
`interesting topics of mutual interests that we had
`conversations about, photography, other electronics
`areas.
` Q. So for the past year or so since this IPR has
`been pending, you've met with Mr. Grinton five times for
`approximately two hours; is that right?
` A. I wouldn't say there were five separate
`meetings. I would say there were five intervals within
`the past two weeks where I was with him.
` Q. Oh, within the past two weeks?
` A. Perhaps three weeks.
` Q. Yeah. So with respect to the 203 proceeding
`you've met -- you only met with Mr. Grinton or spoke to
`him within the past few weeks; is that correct?
`
`TSG Reporting - Worldwide 877-702-9580
`
`K40 Exhibit 1023, pg. 16
`IPR2013-00240
`
`

`

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` STEVEN ORR
` A. Yes.
` Q. Not before that?
` A. Not before that.
` Q. Okay. Had you spoken to him in the past year
`besides that?
` A. I believe the previous contact with John
`Grinton was more than a year ago. And it was a fallout
`from the original Fleming prosecution.
` Q. Your conversations with -- over the past few
`weeks with Mr. Grinton involved both the 203 proceeding
`and the 240 proceeding; is that correct?
` A. The 240, is that -- remind me of the other?
` Q. Yes. That's the 905 patent.
` A. Yes.
` Q. Okay. So when you met with Mr. Grinton, you
`spoke to him about both proceedings, the 203 and the 240
`proceeding; correct?
` A. I did.
` Q. Sir, have you ever been arrested?
` A. No.
` Q. What is your relationship to Escort?
` A. Escort was formed from Cincinnati Microwave
`after their bankruptcy. I was an employee of Cincinnati
`
`
`TSG Reporting - Worldwide 877-702-9580
`
`K40 Exhibit 1023, pg. 17
`IPR2013-00240
`
`

`

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` STEVEN ORR
`consultant about 1998. I have been their consultant
`
` Q. And Escort owns the rights to the 721 patent;
`is that correct?
` A. Yes.
` Q. As well as the 905 patent; right?
` A. That's my understanding.
` Q. When you -- when you came up with your
`invention, were you under the obligation to assign your
`rights to Escort?
` A. I was under no formal obligation. I felt a
`duty to give these concepts to Escort as a consequence
`of the arrangements I made during the ending years with
`Cincinnati Microwave.
` Q. So when you came up with the subject matter of
`the 721 patent and the 905 patent, you were working at
`Cincinnati Microwave; is that right?
` A. Predominantly that's true. Let me think for a
`minute. I can't think of any examples that are not true
`in that question. So my answer is, yes.
` Q. And then you testified you felt an obligation
`to assign your rights to the 721 and the 905 patent to
`the successor of Cincinnati Microwave which is Escort;
`correct?
`
`TSG Reporting - Worldwide 877-702-9580
`
`K40 Exhibit 1023, pg. 18
`IPR2013-00240
`
`

`

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` STEVEN ORR
` A. Correct.
` Q. Did Escort pay you any money as part of the
`assignment of the patents?
` A. I was paid by the bankruptcy committee to
`manage that transfer of technology. So it would not
`have been Escort, it would have been initially through
`the bankruptcy committee that the payments occurred.
`And then later after Cincinnati Microwave or after
`Escort acquired the assets, they paid me as a consultant
`to conclude the -- the formal remaining steps of that
`process.
` Q. The technology transfer process?
` A. Yes.
` Q. Meaning transferring the technology surrounding
`the 721 and the 905 patents to the company --
` A. Yes.
` Q. -- correct? How much were you paid for that
`technology transfer?
` A. That wouldn't -- in order to answer that I
`would have to review my time logs to give you an
`
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`
`TSG Reporting - Worldwide 877-702-9580
`
`K40 Exhibit 1023, pg. 19
`IPR2013-00240
`
`

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` STEVEN ORR
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`TSG Reporting - Worldwide 877-702-9580
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`K40 Exhibit 1023, pg. 20
`IPR2013-00240
`
`

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`TSG Reporting - Worldwide 877-702-9580
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`K40 Exhibit 1023, pg. 21
`IPR2013-00240
`
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`TSG Reporting - Worldwide 877-702-9580
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`K40 Exhibit 1023, pg. 22
`IPR2013-00240
`
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`TSG Reporting - Worldwide 877-702-9580
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`K40 Exhibit 1023, pg. 23
`IPR2013-00240
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`TSG Reporting - Worldwide 877-702-9580
`
`K40 Exhibit 1023, pg. 24
`IPR2013-00240
`
`

`

`Page 25
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` STEVEN ORR
` Q. So what do you do for Escort besides work on
`legal matters?
` A. I design many of their products for them.
` Q. Do you get a royalty or anything from the
`products that you design?
` A. No.
` Q. No other compens -- you don't receive any
`compensation from Escort other than your consulting fee
`of $100 an hour; is that correct?
`
` Q. I'm going to hand you, sir, what's been marked,
`it's already an exhibit in this matter, Exhibit 2073
`from the 203 proceeding. Actually I'm going to have the
`court reporter mark it so we know that this one is from
`the 203 proceeding. Well, actually it's on the cover,
`so I think that's fine. Do you recognize Exhibit 2073?
` A. Yes, I do.
` Q. What is it?
` A. This is a declaration made in relation to the
`203 case.
` Q. It's your declaration; correct?
` A. That is correct.
` Q. Did you write the declaration?
` A. I wrote many sections in the declaration, but
`
`TSG Reporting - Worldwide 877-702-9580
`
`K40 Exhibit 1023, pg. 25
`IPR2013-00240
`
`

`

`Page 26
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` STEVEN ORR
`not all of it.
` Q. Who wrote the other sections?
` A. I worked with John Davis and Tom Humphrey to
`complete this final form of the document.
` Q. Is Exhibit 2073 truthful and accurate?
` A. Identify the document again.
` Q. Exhibit 2073.
` A. Oh, there it is. Yes.
` Q. Bottom right-hand corner.
` A. I see.
` Q. My question, sir, is Exhibit 2073 truthful and
`accurate?
` A. This is correct, truthful and accurate.
` Q. And you signed on page 69; correct?
` A. Yes.
` Q. Under the statement I declare under penalty of
`perjury the foregoing is true and correct?
` A. That is correct.
` Q. I'd like to direct your attention to paragraph
`five of Exhibit 2073. And I'd like you to just kind of
`page forward to paragraph 20. If you could just kind of
`skim those paragraphs for me. Tell me when you get to
`paragraph 20. My question really relates to the heading
`above paragraph five and the heading above paragraph 20.
`
`TSG Reporting - Worldwide 877-702-9580
`
`K40 Exhibit 1023, pg. 26
`IPR2013-00240
`
`

`

`Page 27
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` STEVEN ORR
` A. Good. I've scanned all the way five through
`20.
` Q. Good. Do you see the heading above paragraph
`five, it says circa 1992. Do you see that?
` A. Yes.
` Q. Okay. And do you see the heading above
`paragraph 20, circa 1996?
` A. I do.
` Q. Does that mean that everything from paragraphs
`five through 19 occurred around 1992?
` A. Yes.
` Q. Okay. Now, on paragraph five --
` A. I will comment, I don't know whether all of the
`files referenced in these directories would not maybe
`include some other dated files more recent than that,
`than '92. There could be some '93 or '4 files, for
`example. I hadn't studied the directories from that
`point of view.
` Q. So, sir, your intent was to convey to the
`reader that everything within paragraphs five through 19
`occurred around 1992; correct?
` A. That is correct.
` Q. I'd like to direct your attention to paragraph
`five.
`
`TSG Reporting - Worldwide 877-702-9580
`
`K40 Exhibit 1023, pg. 27
`IPR2013-00240
`
`

`

`Page 28
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` STEVEN ORR
` A. Did you say five?
` Q. Yes, sir. First sentence you say: Prior to
`January 27, 1998, I actually reduced to practice claims
`one through ten of the 905 patent; is that correct?
` A. Yes.
` Q. Did you write that sentence?
` A. No, I did not.
` Q. Is that an accurate statement?
` A. It is.
` Q. What's your understanding of what's required to
`reduce claims to practice?
` A. My understanding is that one has to prove that
`a concept can be realized using available technology
`either through demonstration or other means.
` Q. So your understanding is the demonstration that
`a concept could be implemented, but not necessarily that
`it has to be implemented; correct?
` A. My understanding is -- actually it's a bit
`confused in this regard. In order to patent a concept,
`you need a best mode as I understand it. And at this
`time I wasn't attempting to patent it, so I wasn't
`trying to create a preferred embodiment, if you will,
`but only to explore and prove out the key elements that
`would make it possible to produce a product.
`
`TSG Reporting - Worldwide 877-702-9580
`
`K40 Exhibit 1023, pg. 28
`IPR2013-00240
`
`

`

`Page 29
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` STEVEN ORR
` Q. You didn't answer my question, sir. My
`question is, so your understanding is that to satisfy a
`reduction of practice, a concept only has to be
`demonstrated -- let me start over.
` So your understanding of the requirement to
`reduction to practice does not require that the concept
`be implemented; is that correct?
` A. Not -- not correct. In order to reduce
`something to practice, you have to explore all of the
`elements of the concept to the extent that you can show
`the experimentation or other means that all of the
`elements can -- can be combined to create the whole.
` Q. Without necessarily creating the whole?
` A. Without creating all of the elements of the
`whole. In many cases you have to combine many of the
`sub-elements of the whole before you've really done the
`job.
` Q. So is it your understanding of the reduction to
`practice requirement that a device embodying all
`elements of the claim does not have to be created, but
`rather only individual pieces of it?
` A. Not exactly. Having all of the individual
`pieces I don't believe is sufficient. One must take
`many of those pieces and combine them and prove that the
`
`TSG Reporting - Worldwide 877-702-9580
`
`K40 Exhibit 1023, pg. 29
`IPR2013-00240
`
`

`

`Page 30
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` STEVEN ORR
`key members of that set do indeed work together in ways
`that you have to show, otherwise you could make
`assertions about each individual part that may or may
`not work together.
` Q. But the point is, sir, that to satisfy the
`reduction to practice, I think what you're saying is
`that not the device, if you will, doesn't need to have
`every element of the claim within it; is that correct?
` A. I don't -- I don't know the legal underlying
`definition of that term to its fullest degree, so I'm
`really not qualified to answer that question.
` Q. So you're unsure of what it means to reduce
`something to practice then, is that your testimony?
` A. In totality, yes.
` Q. So who wrote the sentence, the first sentence
`of paragraph five: Prior to January 27, 1998, I
`actually reduced to practice claims one through ten of
`the 905 patent?
` A. The counsel I worked with took the information
`representing my description of my past work and
`characterized it in this -- in this manner.
` Q. Which counsel?
` A. I don't know which. I believe John Davis may
`have contributed to this sentence, but I do not know
`
`TSG Reporting - Worldwide 877-702-9580
`
`K40 Exhibit 1023, pg. 30
`IPR2013-00240
`
`

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`Page 31
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` STEVEN ORR
`precisely.
`
`
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`
` Q. But the conclusion of whether your activities
`constituted a reduction of practice was, in fact, your
`counsel's conclusion and not yours; right?
` A. Yes.
` Q. Now, I noticed at the end of the first
`sentence, sir, you say: I actually reduced to practice
`claims one through ten of the 905 patent. Is that what
`that says?
` A. It does.
` Q. And if we look at the front page of
`Exhibit 2073 in this proceeding, the 203 proceeding --
` A. Excuse me, the front page of?
` Q. Exhibit 2073.
` A. Front page?
` Q. Yes.
` A. Okay.
` Q. The proceeding, the 203 proceeding relates to
`the 721 patent; is that correct?
`
`TSG Reporting - Worldwide 877-702-9580
`
`K40 Exhibit 1023, pg. 31
`IPR2013-00240
`
`

`

`Page 32
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` STEVEN ORR
` A. It does.
` Q. So here you're opining or your counsel is
`stating that you reduced to practice the claims one
`through ten of the 905 patent, it doesn't say the 721
`patent, does it?
` A. I suspect that this declaration shares common
`sections with the declaration on the 905 patent and
`perhaps this was a typo.
` Q. So what's the intent here?
` A. I believe this would have -- should have been a
`reference to the 721 patent. As I look back through the
`document, it appears that there are other examples where
`he does reference the 721 patent.
` Q. Who is he?
` A. The author of that sentence in paragraph five.
` Q. Are you aware of any differences between your
`declaration in the 203 proceeding and the 240
`proceeding?
` A. I am aware of some differences.
` Q. What differences are they?
` A. The claims in the 721 patent and the 905 patent
`are different.
`

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